The Supreme Court has today (9th March) handed down its first judgment in relation to Community Registered Designs. It rejected Magmatic Limited’s appeal from a decision of the Court of Appeal and in doing so has provided some guidance on the interpretation of CRDs, in particular where designs registered in black and white feature colour contrasts.
Magmatic Limited, the manufacturer of the “Trunki” ride-on suitcases for children, had brought a claim for infringement of a CRD for the design of its products against PMS International Limited. PMS were importing into the UK and Germany ride-on suit cases under the name “Kiddee Case”.
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Magmatic Community Registered Design "Trunki" suitcase
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PMS "Kiddee" suitcase
At first instance the High Court found (amongst other things) that the Kiddee Case infringed the CRD. This was overturned by the Court of Appeal, on the basis that the High Court judge had erred in principle by: (i) failing to give proper weight to the overall impression of the CRD as an animal with horns; (ii) failing to take into account the effect of the lack of ornamentation on the surface of the CRD on the overall impression it made; and (iii) ignoring the colour contrast in the CRD between the body of the case and other elements such as its wheels. On taking what it considered to be the correct approach, the Court of Appeal held that the Kiddee Case gave a different overall impression, so did not infringe.
The Supreme Court has upheld the desicision of the Court of Appeal. It agreed that the High Court judge had erred in principle and noted, in particular, that the CRD was not merely for the shape of the Trunki (as the High Court judge had held) but a shape in contrasting colours. Although the Supreme Court expressed sympathy with Magmatic, given the originality of the idea for the Trunki, it considered that the Court of Appeal had directed itself correctly and was entitled to find that the Kiddee Case did not infringe.
In light of this judgment, where a CRD in black & white shows clear colour contrasts then those contrasts will be taken into consideration when comparing the CRD to an alleged infringing product – the registration is not just for the shape of the product.
Unhelpfully, the Supreme Court rather side-stepped the issue of surface ornamentation. Despite a request from Magmatic, with the support of the Comptroller General of Patents Designs and Trademarks, it refused to make a reference to the CJEU as to whether the absence of surface ornamentation can be considered a feature of a CRD. It considered that in this case the Court of Appeal had not made a determination in relation to this issue and therefore it did not need to. The Supreme Court did, however, give its view, on an obiter (and therefore non-binding) basis, that the absence of ornamentation can be feature of a CRD.
This judgment reinforces the need to give careful consideration to the way in which a design is depicted when applying for registration and in particular whether it should be depicted in the form of a line drawing, CAD image, or photograph and whether multiple applications should be filed depiciting the design or parts of the design of a product in different ways to try and obtain the broadest possible protection. Meanwhile, the issue of how to interpret the absence of surface ornamentation on a registered design rolls on.